Delhi District Court
Dayanand Anglo Vedic College Trust & vs Dav Collegiate School on 25 September, 2014
IN THE COURT OF SH. KULDEEP NARAYAN
ADDITIONAL DISTRICT JUDGE-18: CENTRAL DISTRICT
TIS HAZARI COURTS: DELHI
Suit No. 376/2014
Unique ID No. - 02401C0 29368 2011
1. DAYANAND ANGLO VEDIC COLLEGE TRUST &
MANAGEMENT SOCIETY
THROUGH ITS EXECUTIVE BODY,
DAV COLLEGE MANAGING COMMITTEE
CHITRA GUPTA ROAD,
PAHARGANJ, NEW DELHI
THROUGH ITS GENERAL SECRETARY SHRI
R. S. SHARMA
..... PLAINTIFF
VERSUS
1. DAV COLLEGIATE SCHOOL
VILLAGE LACHHIPUR, NATIONAL HIGHWAY
JAMMU PATHANKOT ROAD
KATHUA,
JAMMU & KASHMIR
..... DEFENDANT
Date of Institution : 14/06/2011
Date on which reserved for judgment : 27/08/2014
Date of Decision : 25/09/2014
SUIT U/S-134 OF TRADE MARKS ACT, 1999 FOR PERMANENT,
MANDATORY INJUNCTIONS AND RENDITION OF ACCOUNTS.
Suit No. 376/2014 Dayanand Anglo Vedic College Trust & Management Society Vs. D.A.V Collegiate School 1/12
JUDGMENT
1. Plaintiff filed the suit under Section 134 of The Trade Marks Act 1999 (for short " the Act" ) for permanent and mandatory injunction and for rendition of accounts. The relevant facts as per the plaint are; that the plaintiff is a duly registered society and manages its affairs through its Managing Committee known as DAV College Managing Committee. The plaintiff filed the present suit through its General Secretary who is authorized to file the suit on behalf of the plaintiff. The plaintiff was formed in the year 1886 to spread the aims and objectives of Arya Samaj as propounded by Swami Dayanand Saraswati and to fight against the social evils prevalent in the society at that time. The plaintiff is running and managing more than 700 educational institutions in all the parts of India and abroad. ; that on account of long extensive and uninterrupted use, the name " Dayanand Anglo Vedic" and its acronym " DAV" has attained huge goodwill in the field of education. To safeguard its interest, the plaintiff obtained the registration of the name " Dayanand Anglo Vedic" with the Registrar of Trade Marks vide registration no. 1338938 in class-41 and the device " DAV" vide registration no. 1338939 in class-41 in the name of its executive body i.e. DAV College Managing Committee. The plaintiff is entitled to the exclusive use of the said device, name and acronym with express exclusion of all other persons who have not been authorized by the plaintiff to use the said trademark ; that the plaintiff recently came to know that the defendant which is a school situated at District Kathua State of Jammu & Kashmir, is running an educational institution under the name and style of DAV collegiate school without the consent and approval of the plaintiff with the malafide intention to earn the goodwill and reputation of the plaintiff and is infringing the registered trademark of the plaintiff ; that the defendant has not obtained any license or authority from the plaintiff to use the Suit No. 376/2014 Dayanand Anglo Vedic College Trust & Management Society Vs. D.A.V Collegiate School 2/12 said trademark which amount to infringement/passing off of the registered trademark and copyright of the plaintiff. The plaintiff got issued a legal notice dated 16.04.2010 calling upon the defendant to refrain from infringing the registered trademark of the plaintiff, rendition of accounts and payment of damages but to no avail, hence the present suit.
2. The defendant contested the suit by filing written statement taking preliminary objection that the plaintiff has no locus standi to file the present suit as the plaintiff is not the owner of trademark which is in the name of DAV College Managing Committee ( a registered trust) which is a separate legal entity. It is also stated that this court has no territorial jurisdiction to try the present suit. In reply on merits all other averments have been denied.
3. Vide order dated 17.07.2012 following issues were framed:
1. Whether the plaint is liable to be rejected under Order 7 Rule 11 CPC ? (OPD)
2. Whether this court has no territorial jurisdiction to entertain and try this suit ? (OPD)
3. Whether the plaintiff is entitled for relief for permanent injunction in respect of the registered trademark of the plaintiff against the defendant, as prayed ? (OPP)
4. Whether the plaintiff is entitled for relief for decree for mandatory injunction as prayed ? (OPP)
5. Whether the plaintiff is entitled for decree for rendition of accounts ? (OPP) Suit No. 376/2014 Dayanand Anglo Vedic College Trust & Management Society Vs. D.A.V Collegiate School 3/12
6. Whether the plaintiff is entitled for decree for recovery of amount due upon rendition of account ? (OPP)
7. Relief.
4. To prove its case the plaintiff got examined Sh. R. S. Sharma (PW1) and Smt. P. P. Sharma (PW2). On the other hand the defendant got examined Sh. Bharat Bhushan Mahajan (DW1), Sh. Bishan Bharat (DW2) and Smt. Santosh Mahajan (DW3). Both the parties also relied on documentary evidence.
I heard arguments on both the sides and perused the material available on record.
5. My issue wise findings are as under:
ISSUE NO. 1 :
(1) Whether the plaint is liable to be rejected under Order 7 Rule 11 CPC ? (OPD).
The onus to prove this issue was placed on the defendant. In the present case both plaintiff and the defendant have led their respective evidence which are to be appreciated for just adjudication of the present suit. The stage for consideration of rejection of plaint under Order 7 Rule 11 CPC is already over and therefore this issue is disposed off accordingly.
Suit No. 376/2014 Dayanand Anglo Vedic College Trust & Management Society Vs. D.A.V Collegiate School 4/12 ISSUE NO. 2:
(2) Whether this court has no territorial jurisdiction to entertain and try this suit ? (OPD).
The onus to prove this issue was placed on the defendant. It is contended by the defendant that this court has no territorial jurisdiction to try the present suit as cause of action did not arise within the territorial jurisdiction of this court. It is also contended that the defendant is working for gain in the state of Jammu & Kashmir and the plaintiff got itself registered with the Registrar of Societies in the state of Punjab and therefore this court has no territorial jurisdiction to entertain and try this suit.
The plaintiff filed the present suit under Section 134 of the Act which is reproduced as under:
134. Suit for infringement, etc., to be instituted before District Court.--
(1) No suit-
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered, shall be instituted in any Court inferior to a District Court having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of sub-
section (1), a " District Court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of Suit No. 376/2014 Dayanand Anglo Vedic College Trust & Management Society Vs. D.A.V Collegiate School 5/12 whose jurisdiction, at the time of the inst it u t io n of the suit or other proceeding, the person in st itu t ing the suit or pro ce e d in g , or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain.
Explanation.- For the purposes of sub-section (2), " person"
includes the registered proprietor and the registered user.
As per Sub Section 2 of Section 134 as mentioned above, it is clearly stipulated that notwithstanding anything contained in the CPC or any other law for the time being in force, the District Court having jurisdiction includes a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit, the person instituting the suit, actually and voluntarily resides or carries on business or personally works for gain. The explanation attached also stipulates that the " person" includes the " registered proprietor" and the " registered user" . As per the plaint, plaintiff is the registered proprietor of the trademark " DAV" and " Dayanand Anglo Vedic" who is carrying on business and working for gain at Chitra Gupta Road Paharganj, New Delhi. The plaintiff has its registered office in Delhi and the aforesaid trademark was also got registered with the Registrar of Trade Marks at New Delhi. In view of the above mentioned provision, there is no doubt that this court has territorial jurisdiction to try the present suit. This issue is accordingly decided in favour of plaintiff and against the defendant.
ISSUE NO. 3 & 4:
(3) Whether the plaintiff is entitled for relief for permanent injunction in respect of the registered trademark of the plaintiff against the defendant, as prayed ? (OPP).
Suit No. 376/2014 Dayanand Anglo Vedic College Trust & Management Society Vs. D.A.V Collegiate School 6/12 (4) Whether the plaintiff is entitled for relief for decree for mandatory injunction as prayed ? (OPP).
Both the issues are being decided simultaneously. The onus to prove both the issues was placed on the plaintiff. The plaintiff filed suit under Section 134 of the Act seeking permanent, mandatory injunction and rendition of accounts from the defendant, alleging infringement of its registered trademark by the defendant. The term " trademark" as defined under Section 2 (zb) of the Act is as under:
(zb) " trade mark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and-
(i) xxxxxxxxxxx
(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark;
As per Section 2(w), " registered trademark" means a trademark which is actually on the register and remaining in force. Similarly, as per Section 2 (v) " registered proprietor" in relation to a trademark, means the person for the time being entered in the register as proprietor of the trademark.
Suit No. 376/2014 Dayanand Anglo Vedic College Trust & Management Society Vs. D.A.V Collegiate School 7/12 To discharge the burden placed on it to prove both the aforementioned issues, it was incumbent upon the plaintiff to establish that the plaintiff is a " registered proprietor" of a " registered trademark" which is being infringed by the defendant by its acts and deeds. The plaintiff got examined Sh. R. S. Sharma (PW1), General Secretary of DAV College Managing Committee who deposed vide affidavit Ex. PW1/1 & relied on. Society registration certificate (Ex. PW1/A), rules and regulations of the plaintiff society (Ex. PW1/B), List of schools and colleges being run by the plaintiff society (Ex. PW1/C), PW1 deposed on the line of facts as mentioned in the plaint and relied on copies of form TM-1 PW1/D, trademark certificate Ex. (PW1/E).
In his cross examination PW1 clarified that DAV College Managing Committee is the executive body of the plaintiff society and as per the regulations Ex. PW1/B the Joint Secretary is authorized to file the suit on behalf of the plaintiff society. On further cross examination PW1 stated that he came to know few weeks ago that defendant is running a school in the name of DAV without any authorization from the plaintiff. He further stated that every school being managed by the plaintiff bear the words " Under the direct control of DAV College Managing Committee" on their sign boards though he had not seen the sign board of the defendant however he categorically stated that by using the word " DAV" , the defendant might cause deception. The plaintiff also got examined Smt. P. P. Sharma, (PW-2) regional director who deposed by way of affidavit Ex. PW2/A. She is the regional director of Jalandhar zone which covers the state of Jammu & Kashmir and is responsible for the management of all the schools of the plaintiff society running in the state of Jammu & Kashmir. Her testimony is not of much significance, being in the nature of hearsay evidence.
Suit No. 376/2014 Dayanand Anglo Vedic College Trust & Management Society Vs. D.A.V Collegiate School 8/12 In defence, the defendant got examined Sh. Bharat Bhushan Mahajan (DW1) who deposed by way of affidavit Ex. DW1/A. DW1 deposed that the Arya Samaj Mandir, Kathua (J&K) has been running DAV schools, imparting education on the basis of teachings of Swami Dayanand Saraswati and in the month of February-March, 1986, the plaintiff through its employees had approached him for taking over the management of existing DAV school Kathua which was consented and the management of school was handed over on certain terms. He further deposed that the plaintiff took over the management of DAV school Kathua in the year 1986 and continued running the same till 31.03.1994. The management of the said school was taken over by Arya Samaj Mandir Kathua with effect from 01.04.1994 and therefore it was well within the knowledge of the plaintiff that the word " DAV" was being used by defendant in and before 1986. A perusal of testimony of DW1 reveal that admittedly the facts as deposed by him are beyond pleadings of the defendants.
The defendant next got examined Sh. Bishan Bharti DW2 who deposed by way of affidavit Ex. DW2/A. DW2 also stated that the word " DAV"
is being used by the defendant for the last more than 30 years without any interruption. The testimony of Smt. Santosh Mahajan (DW3) vide affidavit Ex. DW3/A is also to the same effect. In her cross examination DW3 deposed that she was appointed by the plaintiff's society itself and the defendant school remained with the plaintiff till 1994. Admittedly, no documentary evidence to prove the association of the defendants school with the plaintiff society could be filed by the defendant nor DW3 could produce any appointment letter in her favour, issued by the plaintiff society.
In view of the afore discussed facts and circumstances, it is clear Suit No. 376/2014 Dayanand Anglo Vedic College Trust & Management Society Vs. D.A.V Collegiate School 9/12 that the plaintiff filed the present suit through Sh. R. S. Sharma, Joint Secretary of its executive body i.e. DAV College Managing Committee. As per the certificate of registration of trademark under Section 23 (2), Rule 62 (1) of the Act (Ex. PW1/E, colly), the term " Dayanand Anglo Vedic" with its acronym 'DAV' is registered in the name of DAV College Managing Committee. The present suit was filed by the plaintiff as per the regulations (Ex. PW1/B). As per the list of colleges (Ex. DW1/C) the name of the defendant school does not found any mention which is being run or managed by the plaintiff. Admittedly, the defendant is using the word " DAV" without any authorization from the plaintiff who is the " registered proprietor" of the said trademark. The evidence led by the defendant in the form of examination of DW1, DW2 and DW3 nowhere indicated that the defendant is a " permanent user" of the said trademark in terms of Section 2(r) of the Act wherein it is also stipulated that for the use of a " registered trademark" , the consent of " registered proprietor"
must be in a written agreement.
As stipulated under Section 29 of the Act, a registered trademark is infringed by a person who, not being a registered proprietor or a permitted user, uses in the course of trade, a mark which is identical with or deceptively similar to the trademark in relation to the case and services in respect of which the trademark is registered, because of which its identity with the registered trademark and the identity of case and services covered by such registered trademark is likely to cause confusion on the part of the public. As per Section 29 sub section 3 of the Act, in any case falling under clause (c) of sub section (2), the court shall presume that it is likely to cause confusion on the part of the public.
The defendant failed to lead any evidence to show that it is a Suit No. 376/2014 Dayanand Anglo Vedic College Trust & Management Society Vs. D.A.V Collegiate School 10/12 permitted user of the trademark belonging to the plaintiff, the registered proprietor of the same. The testimony of DW1 and DW3 cannot be taken into consideration being beyond pleadings and are clearly indicative of material improvement in the case of the defendant. The defendant, by using the term " DAV" , clearly infringed the registered trademark of the plaintiff in terms of Section 29 of the Act. Therefore, in my considered opinion, the plaintiff is entitled for the relief of permanent and mandatory injunction as claimed in the present suit. Both the issues are accordingly decided in favour of the plaintiff and against the defendant.
ISSUE NO. 5 & 6:
(5) Whether the plaintiff is entitled for decree for rendition of accounts ? (OPP) (6) Whether the plaintiff is entitled for decree for recovery of amount due upon rendition of account ? (OPP).
The onus to prove both the issues was placed upon the plaintiff. The plaintiff prayed for a decree of rendition of accounts with consequential relief of recovery of amount so found due upon the rendition of accounts by the defendant however not a single evidence was led by the plaintiff to specify any such amount due on the defendant or to be recovered from it. Even no details of account of the amount earned or collected by the defendant could be specified by the plaintiff for which it is praying for a decree of rendition of accounts from the defendant. Accordingly, in view of nil evidence led by the plaintiff in this regard, the plaintiff is not entitled for a decree of rendition of accounts and for recovery of any amount from the defendant. Both the issues are accordingly decided against the plaintiff.
Suit No. 376/2014 Dayanand Anglo Vedic College Trust & Management Society Vs. D.A.V Collegiate School 11/12 ISSUE NO. 7:
(7) Relief.
In view of the findings on issue no. 2, 3 and 4, suit of the plaintiff is partly decreed. The defendant is hereby restrained from using the term " Dayanand Anglo Vedic" or its acronym " DAV" in any manner whatsoever. The defendant is further directed to deliver up all the infringing material including letter head, stationery, sign boards etc to the plaintiff. The plaintiff is also entitled for the costs of the suit.
Decree sheet be prepared accordingly.
File be consigned to Record Room after due compliance.
Announced in the Open Court Dated: 25/09/2014 (Kuldeep Narayan) Additional District Judge-18 (Central) Room No. 349,Tis Hazari Courts, Delhi.
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